The Complainant is National Westminster Bank plc, London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, AB, Sweden.
The Respondent is William Stein, London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 4, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The facts relevant to the findings and decision in this case are that:
1. the Complainant provides banking and financial services by reference to the registered trade mark NATWEST;
2. the disputed domain name was registered on February 24, 2013;
3. at the time the Complaint was filed, the disputed domain name was inactive;
4. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use its trade mark or to register any domain name incorporating the trade mark.
5. Pre-Complaint correspondence sent by Complainant to Respondent went unanswered. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in NATWEST and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Panel finds that the Complainant has trade mark rights in NATWEST acquired through registration2.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.3 The comparison then reduces to NATWEST with NATWESGROUP. Neither the omission of the letter “s”, nor the addition of the descriptive word “group”, is sufficient to prevent the terms from being confusingly similar. Discounting or even ignoring prior knowledge of the trade mark, an Internet user would, on seeing the disputed domain name, readily discern the integer, NATWES, and the prominent, distinctive part of the domain name and so would be likely to confuse it with the trade mark.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests4.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs database identifies the registrant as William Stein and so does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trademark rights in the disputed domain name, registered or not.
There is no evidence that the disputed domain name has ever been used in connection with a bona fide offering of goods or services. On the contrary, there is evidence that the disputed domain name has been used as part of a “phishing” scheme directed at customers of the Complainant. In particular, at an earlier point in time the disputed domain name resolved to a website which was a fraudulent imitation of the Complainant’s website. Such use could never establish a legitimate interest in the domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
To the extent that the domain name has been used to “phish” for sensitive customer information, the Panel finds that the Respondent’s conduct falls squarely under paragraph 4(b)(iii) of the Policy. That finding is dispositive of the matter but for the sake of completeness the finding is also proof of registration in bad faith. To the extent that the disputed domain name was not in use at the time of the Complaint, Panel endorses and relies upon the reasoning in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which held, broadly, that bad faith use is able to be found even in the absence of actual use when it is clear that any use of the domain name would inevitably result in confusion. That in turn requires proof of a level of reputation in the relevant trade mark. In this case the Panel is willing to find adequate reputation in the Complainant’s NATWEST trade mark to justify application of the Telstra Corporation,Supra reasoning. The trade mark has been in use for more than forty years. The Complainant’s business has over seven million customers. The Complainant cites earlier UDRP decisions in its favour where the reputation of the NATWEST trade mark has been accepted.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that both the disputed domain name be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: June 18, 2013
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 Complaint annexures a schedule of the Complainant’s international trade mark portfolio. Albeit that there is no further or better evidence of any one of the alleged registrations for the trade mark NATWEST, the Panel is prepared in the absence of any contest from the Respondent to accept the claim that the trade mark is registered.
3 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
4 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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